Appeal No. 2001-1437
Application No. 08/764,145
that the prior art both suggest the claimed subject matter and reveal a reasonable
expectation of success to one reasonably skilled in the art. In re Vaeck, 947 F.2d 488,
493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991).
According to the examiner, “Geoffroy teaches addition of different concentrations
of antagonist to agonist resulting in changing the degree of receptor desensitization ....
If the ratio of antagonist to agonist shown in Figure 4 does not represent the optimum
ratio, then it would have been obvious to one of ordinary skill in the art to continue the
process of Geoffroy et al. and to arrive at the optimum ratio for combining agonist and
antagonist to achieve the desired results because optimization of results is routine
procedure and within ordinary skill.” Answer, page 4. As to the requisite expectation
of success, the examiner finds that (Answer, pages 4-5):
One would reasonably expect to be successful in determining the optimum
agonist:antagonist ratio experimentally because Geoffroy shows an
effective experimental system to use as well as the dose dependence of
the effects of agonist and antagonist within that system... Optimum
concentrations of agonist and antagonist to be used within a system to
achieve a known and demonstrated result represent the same
composition, regardless of the method used to determine the amounts of
each. It is believed that because the relevant effect is demonstrated, the
claimed composition ratio must have been achieved and thus the claimed
composition is anticipated. If not, it would have been obvious to continue
the empirical method taught by Geoffroy to determine more precisely what
the optimum ratio is and one would have expected success in doing so
because Geoffroy shows the dose dependence of the observed effect.
In rebuttal, appellant argues that the claimed “precise formulation is not disclosed
textually or inherently” by Geoffroy. Brief, page 3. Appellant argues that the conclusion
that the examiner draws that Geoffroy shows the claimed formula (inherently) because
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